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January 11, 2023

Court Case Bulletin (CCB): Claim For Trademark Infringement Can Be Included In A Suit For Passing Off At A Later Stage

Author: Former Intern - Anushree Modi

In the matter of Milaap Social Ventures Pvt. Ltd. & Anr. V. Google India Pvt. Ltd. & Anr. [W.P. (C) No. 6220/2022, the Single Judge [Sachin Shankar Magadum, J.] of the High Court of Karnataka, by decision dated November 23, 2022, set aside the order passed by the Trial Court and held that the Petitioner is entitled to amend the plaint to incorporate a prayer of relief against trademark infringement in a suit for passing-off.

Order 6 Rule 17, Code of Civil Procedure (‘CPC’) provides, “The Court may at any stage of the proceedings allow either party to alter or amend his pleadings in such manner and on such terms as may be just and …shall be made as may be necessary for the purpose of determining the real questions in controversy…”. The question is whether the prayer in a plaint be amended to seek an additional relief if the facts surrounding the cause of action remain the same.  

The Petitioner had sought a perpetual injunction against the Respondents from passing off the Petitioner’s trademark ‘MILAAP’ as a keyword to divert traffic to the Respondent’s website. During the pendency of the suit, the Petitioner’s mark ‘MILAAP’ was registered. Consequently, the Petitioner filed an application under Order 6 Rule 17 of the CPC to amend the plaint to include trademark infringement against the Respondents in the prayer. However, the Trial Court had rejected the application on the ground that the subsequent event of registration would give rise to a new cause of action, and that it would cause serious prejudice to the Respondents.

In the present petition against the Trial Court’s order, the Petitioner argued that the decision of the Trial Court to reject the application under Order 6 Rule 17 of CPC solely on the basis that the Plaintiff can file a separate suit is patently erroneous, as the ground on which the suit is based would remain the same. The Respondents contended that the Petitioner cannot subsequently convert a suit filed under common law remedy to a statutory suit under the Trade Marks Act.

The High Court rejected the Respondents’ contention and held that “If the cause of action for infringement and passing off actions are substantially identical and same in law and both the reliefs are virtually based on the same fundamental idea, and if plaintiffs intend to incorporate the relief relating to infringement of trademark, that would not fundamentally change the character of the suit and it would only be in the nature of alternative relief.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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